Inevitable Disclosure: Dealing with Trade Secret Issues When Hiring a New Employee

摘要

Imagine pulling off a major business coup: hiring away a senior marketing executive from a key competitor to lead the development of a major new product line. The exec comes with clean hands. She does not have a non-compete agreement in place with her former employer, and both you and she have explicitly agreed that she will not disclose any trade secrets from her former employer while she is working in her new job. Then, the other shoe drops. The competitor files for a temporary restraining order to prevent the new executive from working for you. It does not argue that any of its trade secrets have been disclosed or even that you or your new employee intend to steal them. Instead, it argues that the marketing executive will inevitably disclose its trade secrets simply by performing the functions of her new job. Does the competitor have a case? That depends. There have been instances in which courts did find that the nature of a new job at a competitor made it impossible for an employee to function without disclosing trade secrets, including a well-known case between Pepsi and the manufacturer of Gatorade and Snapple. However, the theory of inevitable disclosure is also one of the toughest hills to climb in intellectual property law, and courts in several states have rejected it outright.